Friday, January 27, 2017

TTAB Test: Is MERLIN for Watches Confusable with MERLIN for Clothing?

The USPTO refused to register the mark MERLIN for "timepieces and chronometric instruments," finding it confusingly similar to the identical mark registered for various articles of clothing. The Examining Attorney relied on third-party registration evidence to show the relatedness of the goods, but Applicant Breitling submitted "a number of pairs of use-based third-party registrations for the same mark [but different owners] that are used on clothing on one hand and watches on the other." How do you think this came out? In re Breitling SA, Serial No. 879152818 (January 25, 2017) [not precedential].

The identity of the marks "weighs heavily" in favor of a finding of likely confusion. When the marks are identical a lesser degree of similarity between the goods is necessary to support such a finding.

Applicant Breitling submitted numerous registrations for the mark MERLIN but none covered goods related to those at issue here, and so the registrations had no probative value vis-a-vis the strength of the cited mark.

Examining Attorney Fred Carl III submitted third-party registrations that encompassed both clothing and watches under a single mark, and the marks were not house marks or designer marks. Breitling countered with pairs of registrations showing that the USPTO has registered the same or similar marks for clothing offered by one party and watches offered by another. Some of the registrations were cancelled, however, and others were not based on use in commerce. Moreover, some of the pairs were for not for identical marks, or covered goods unrelated to those involved here.

Nonetheless, a number of the pairs of marks of marks were relevant. "This evidence does not, however, disprove the Examining Attorney’s evidence that watches and clothing may be sold under the same mark. It merely reduces the weight to which the Examining Attorney’s evidence is entitled."

The Board concluded that there is some relationship, albeit not a strong one, between watches and clothing. It pointed out that watches and clothing may be complementary products in that consumers may purchase watches as a fashion accessory. Thus some consumers may expect watches and clothing identified by the same mark to emanate from the same source.

The evidence showed that watches and clothing may be sold in the same trade channels. The Board noted that the application and cited registration have no limitations as to the specific type of goods, and so they encompass inexpensive items bought with only ordinary care.

Considering the relevant du Pont factors, the Board found confusion likely and it affirmed the refusal to register.

6 Comments:

“Moreover, it is common knowledge that watches and clothing may be complementary products in that consumers may purchase watches as a fashion accessory. Accordingly, some consumers would expect that watches and clothing identified by identical marks emanate from the same source.”

So the Board is taking judicial notice that watches and clothing are complementary in that consumers may purchase them as fashion accessories? Doesn’t this conclusion also mean that many – perhaps most – articles of clothing would be complementary too, and that we don’t need evidence of relatedness?

There should be some sort of special rule in clothing cases, akin to the rule for restaurants and food. Years ago to get a registration for clothing you were more frequently required to show that you made clothes. In other words, you had to be like Levis or LL Bean.

Now everyone who sells anything can get a registration for clothing articles that bear the logo of the company, but which are sold (or given away) merely to promote the true goods or services of the company. Either, they should not allow these type of registrations or they need a "something more rule" to show a relationship between clothing and other goods/services.

By the way I hate the captcha that says click on the images of a river - I can't tell if they are rivers or lakes. Aye curumba!

I agree with the TTAB’s decision to affirm the refusal to register the MERLIN mark. With respect to the first du Pont factor, the marks are identical in their appearance, sound, and commercial impression. The fact that the marks are identical heavily weighs against the applicant in regards to the commercial impression prong. In Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261 (Fed. Cir. 2002), the court found that “PACKARD TECHNOLOGIES and HEWLETT PACKARD differ in appearance and sound, but the marks convey a similar commercial impression because consumers would be aware of Hewlett–Packard's heavy involvement in technology-based goods, and therefore the marks are similar in their entireties.”

Here, the registered mark is used in connection with many types of articles of clothing, ranging from shirts, dresses, socks, gloves, to waterproof clothing and sports clothing. Because of the wide range of goods that are connected with the registered mark, consumers might think that the registered MERLIN mark was involved in watches, a related good to clothing. Thus, the first du Pont factor weighs against the applicant and the TTAB was correct in using this factor to support a finding of a likelihood of confusion.

The evidence of third-party registrations offered by the applicant was not convincing to show that the registered mark was weak. One of the more heavily-weighted factors in the likelihood of confusion analysis is the similarity or dissimilarity and nature of the goods and services. For example, one registered MERLIN mark (Registration No. 4617565) was for a computer program that can help identify birds; another third-party registration for MERLIN (Registration No. 4728667) was related to remote controls for televisions. Despite the multiple registrations for “MERLIN,” the third-party registrations do not lend credence to the argument that the registered MERLIN mark lacks strength because the goods and services are so different.

Further, I agree with the evidence presented that watches and clothing can be sold in the same trade channels. It is common knowledge among consumers that designers can expand their clothing line to begin including goods such as watches and perfumes. Taking these factors as a whole, the TTAB was correct to affirm the refusal to register.